WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verizon Trademark Services LLC v. Osman Khan, NutriGold Inc
Case No. D2015-1651
1. The Parties
Complainant is Verizon Trademark Services LLC of Arlington, Virginia, United States of America ("United States"), internally represented.
Respondent is Osman Khan, NutriGold Inc of Orem, Utah, United States.
2. The Domain Name and Registrar
The disputed domain name <verizonphone.best> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2015. On September 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on September 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 20, 2015.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 3, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the owner of a number of registrations for the word, and word and design, trademark and service mark VERIZON on the principal register of the United States Patent and Trademark Office (USPTO), including registration number 2886813, registration dated September 21, 2004, in international classes (ICs) 9, 16, 35, 36, 37, 38, 41 and 42, covering, inter alia, telecommunications services, Internet hosting services, and related equipment.
Complainant is a major telecommunications service provider based in the United States, serving global markets, and generating more than USD 127 billion in revenue in 2014. Complainant's securities are listed on the New York Stock Exchange. Complainant has invested many billions of dollars since 2002 advertising and promoting goods and services under the VERIZON trademark and service mark (hereinafter "trademark"). Complainant operates a number of commercial Internet websites that can be accessed through, inter alia, <verizon.com>.
Prior panel determinations under the Policy have recognized a well-known character for the VERIZON trademark (see, e.g., Verizon Trademark Services LLC v. clpik-studio.com Pawel Tykwinski, Registration Private ID: CR68165630, WIPO Case No. D2011-1092; Verizon Trademark Services LLC v. Jinsoo, Yoon, Nic Yoon, Jinsu Yoon, Jinsoo Yoon, WIPO Case No. D2011-0247, and; Verizon Trademark Services LLC v. Ali Aziz, WIPO Case No. D2010-0833).
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the creation date for the record of registration was February 20, 2015, and Respondent was the registrant as of that creation date.
The disputed domain name resolves to a web page stating "website coming soon!" and "Please check back soon to see if the site is available". There is no further indication of use of the disputed domain name on the record of this proceeding.
According to WhoIs records furnished by Complainant, in addition to the disputed domain name Respondent has registered the domain names <nikon.best> and <androidphone.best>.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant asserts ownership of rights in the trademark VERIZON as evidenced by registration at the USPTO and use in commerce in the United States and elsewhere. Complainant asserts ownership of common law trademark rights in VERIZON based on substantial and continuous use since as early as April 2000. Complainant alleges that the trademark VERIZON is a coined term deserving of the highest degree of trademark protection, and that the VERIZON trademark is famous.
Complainant contends that the disputed domain name is confusingly similar to the VERIZON trademark. Complainant argues that the disputed domain name directly incorporates its famous VERIZON trademark, and adds the generic term "phone" which identifies Complainant's products and services. Complainant alleges that addition of the generic Top-Level Domain (gTLD) ".best" is irrelevant when determining confusing similarity, and that the gTLD ".best" fails to adequately distinguish the disputed domain name from Complainant's trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) the disputed domain name is not associated with a website displaying substantial content; (2) Respondent is not connected or affiliated with Complainant or its trademark; (3) Respondent has not sought or obtained any trademark registrations for VERIZON or any variation thereof; (4) Respondent has not been authorized by Complainant to use its VERIZON trademark, and; (5) Respondent is not engaging in fair use of Complainant's VERIZON trademark. Complainant contends that Respondent chose to register the disputed domain name to capitalize on consumer recognition of its famous VERIZON trademark.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent has registered several domain names that incorporate the famous trademarks of others, which is indicative of bad faith; (2) Respondent has intentionally created a likelihood of confusion as to Complainant's affiliation with Respondent's website location, including through initial interest confusion; (3) Respondent was clearly aware of Complainant's trademark when it registered the disputed domain name; (4) registration and use of a domain name including a famous trademark of a third party without proving rights or legitimate interests represents bad faith registration and use, and; (5) Respondent's use of the disputed domain name to divert Internet traffic from Complainant is disruptive to Complainant's business and constitutes bad faith registration and use.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Respondent did not reply to email notification. The express courier delivery service engaged by the Center reported that the Written Notice of the commencement of the proceeding was successfully delivered to the address identified in the record of registration of the disputed domain name. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark VERIZON, including through multiple registrations at the USPTO and by use in commerce in the United States (see Factual Background supra). Respondent has not contested Complainant's evidence of trademark rights. The Panel determines that Complainant has rights in the trademark VERIZON.
The disputed domain name directly incorporates Complainant's VERIZON trademark and adds the term "phone". The term "phone" refers to a telecommunications device that is directly associated with Complainant's line of business, as well as to the act of using that device for communications purposes. Internet users viewing "verizonphone" are likely to associate that combination term with Complainant and its line of business. The TLD ".best" is an adjectival term referring to exceeding or excelling above all others.1 As such, it does not distinguish the disputed domain name from Complainant's trademark. The Panel determines that the disputed domain name is confusingly similar to Complainant's VERIZON trademark.
The Panel determines that Complainant has rights in the VERIZON trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c)).
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant's prima facie showing of lack of rights or legitimate interests.
Respondent's registration and limited use of the disputed domain name (i.e. stating "website coming soon!" and "Please check back soon to see if the site is available." on a webpage) does not on its face manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name "has been registered and is being used in bad faith" (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that "for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith." Those are: "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The disputed domain name appears intended to cause Internet user confusion with Complainant's trademark that is famous in connection with telecommunications goods and services. Respondent was virtually certain to have been aware of Complainant's rights in its trademark when it registered the disputed domain name. Respondent has not made any use of the disputed domain name that evidences rights or legitimate interests.
Paragraph 4(b) of the Policy refers to circumstances evidencing registration and use of a domain name in bad faith. These include that Respondent has registered the disputed domain name to prevent Complainant from reflecting its trademark in a corresponding domain name, provided that it is engaged in a pattern of such conduct. Respondent has prevented Complainant from registering its trademark in the domain name corresponding to the disputed domain name. Complainant also has provided evidence that Respondent has registered at least two other domain names that incorporate trademarks of third-parties (i.e., <nikon.best> and <androidphone.best>) in domain names.2 Registering three domain names incorporating trademarks of third parties is sufficient to constitute a "pattern" of conduct evidencing bad faith.
The Panel does not make its determination on this basis alone. Paragraph 4(b) of the Policy refers to circumstances evidencing registration and use of a domain name in bad faith, and those circumstances include those indicating that a respondent registered a disputed domain name primarily for the purpose of selling or otherwise transferring the registration to a complainant who is owner of a trademark, or its competitor.
The trademark VERIZON is a coined term that is famous and well known in the United States. Respondent has failed to respond to the Complaint and to suggest any plausible grounds for its registration of the disputed domain name. In light of the well-known nature of Complainant's trademark as an identifier for telecommunications products and services, the Panel considers the balance of probabilities to tip strongly in favor of a determination that Respondent registered and is using the disputed domain name to sell it to Complainant, or to a third-party competitor of Complainant, for a value in excess of Respondent's out-of-pocket costs directly related to it.
Because Respondent has engaged in a pattern of registering trademarks of third parties in domain names to prevent their corresponding registration by the trademark owners, including Complainant, and because Respondent has provided no plausible explanation for its registration of the well-known trademark of Complainant, the Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <verizonphone.best>, be transferred to Complainant.
Frederick M. Abbott
Date: November 10, 2015
1 See, e.g., Miriam-Webster Online Dictionary, http://www.merriam-webster.com/dictionary/best, visited by the Panel on November 8, 2015.
2 The trademark ANDROID is used by Google in connection with mobile phones and related operating systems. See USPTO registration number 4692657, registration dated February 24, 2015 (application for registration filed on October 31, 2007), panel search of USPTO TESS database, November 10, 2015. Google also appears to assert unregistered trademark rights in the term "android", https://www.google.com/permissions/trademark/trademark-list.html, visited by the Panel on November 8, 2015.